OPPOSITION No B 2 721 515

Meray Kuruyemis Gida San. Ve Tic. Ltd. Sti., 4. Organize Sanayi Bolgesi 83414 Cadde no.11, Gaziantep  27120, Turkey (opponent), represented by Nicola Novaro, Via Marconi, 14, 18013 Diano Castello (Imperia), Italy (professional representative)

a g a i n s t

Merano Speck GmbH, Peter Mitterhofer Str. 11, 39025 Naturns bei Meran, Italy (applicant) represented by Kümmerlein Simon & Partner Rechtsanwälte, Messeallee 2, 45131 Essen, Germany (professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 721 515 is upheld for all the contested goods, namely 

Class 29:        Preserved, dried and cooked fruits and vegetables; snacks, prepared and semi-prepared meals and part preparations included in class 29.

Class 30:        Bread, pastry and confectionery; snacks, prepared and semi-prepared meals and part-preparations, included in class 30, including snacks, mainly consisting of a bread, bread roll or pastry component, mainly consisting of meat and/or meat products, charcuterie, poultry and/or poultry cuts, vegetables and/or vegetable products, cheese, spices and herbs; extruded and pelletised or otherwise manufactured or processed potato, corn, rice or other cereal products for snacks; savoury biscuits and pretzels.

2.        European Union trade mark application No 15 083 454 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 083 454, namely against some of the goods in Class 29 and Class 30. The opposition is based on European Union trade mark registration No 14 517 353. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 29:        Roast nuts; edible nuts; salted nuts; spiced nuts; dried nuts; ground nuts; shelled nuts; blanched nuts; candied nuts; preserved nuts; processed nuts; prepared nuts; nuts, prepared; seasoned nuts; roasted nuts; nuts being preserved; processed betel nuts; nuts being cooked; nuts being dried; cashew nuts (prepared -); snack foods based on nuts; mixtures of fruit and nuts; pastes made from nuts; snack mixes consisting of dehydrated fruit and processed nuts; processed fruits, fungi and vegetables (including nuts and pulses); prepared pistachio; fruits (crystallized -); bottled fruits; dried fruits; pickled fruits; glazed fruits; cooked fruits; cut fruits; prepared fruits; canned fruits; preserved fruits; tinned fruits; frozen fruits; frosted fruits; crystallized fruits; candied fruits; processed fruits, fungi and vegetables (including nuts and pulses); sugar-coated fruits on a stick; fruits, tinned [canned (am.)]; fruits in preserved form; fruits preserved in alcohol; bottled sliced fruits; canned sliced fruits; almonds, ground; ground almonds; olives stuffed with almonds; ground almond; almonds (prepared -); prepared almonds; edible sunflower seeds; seeds (processed sunflower -); sunflower seeds, prepared; processed sunflower seeds; hazelnut spread; coated peanuts; canned peanuts; peanuts, prepared; peanuts, processed; processed peanuts; roasted peanuts; cornichons; corn fats; corned beef; corn oil [for food]; tahini [sesame seed paste]; processed pumpkin seeds; jams; fruit jams; jellies, jams, compotes, fruit and vegetable spreads.

Class 30:        Gingerbread nuts; chocolate-coated nuts; coated nuts [confectionery]; chocolate spreads containing nuts; sauces flavoured with nuts; sugar coated pine nuts; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; sweet rice with nuts and jujubes (yaksik); food mixtures consisting of cereal flakes and dried fruits; flavourings made from fruits [other than essential oils]; filled yeast dough with fillings consisting of fruits; flavourings made from fruits; sugared almonds; flavourings of almond; paste (almond -); almond cake; almond pastries; almond confectionery; sugar almonds; flavourings of almond for food or beverages; almond flavorings, other than essential oils; pavlovas made with hazelnuts; pavlovas flavoured with hazelnuts; spreads consisting of hazelnut paste; processed cereals; cereals, processed; breakfast cereals; hot breakfast cereals; foodstuffs made from cereals; breakfast cereals containing fruit; breakfast cereals containing honey; breakfast cereals containing fibre; snacks manufactured from cereals; crisps made of cereals; ready-to-eat cereals; preparations made from cereals; muesli consisting predominantly of cereals; foods produced from baked cereals; snack products made of cereals; snack foods made from cereals; breakfast cereals made of rice; crackers made of prepared cereals; breakfast cereals, porridge and grits; whole wheat grains being cooked; food preparations based on grains; whole wheat grains being dried; breakfast cereals containing a mixture of fruit and fibre; cereals for food for consumption by humans; processed cereals for food for human consumption; snack foods consisting principally of extruded cereals; biscuits for human consumption made from cereals; cereals prepared for consumption by humans; cereals for use in making pasta; snack food products made from cereals; breakfast cereals flavoured with honey; processed grains; processed grains, starches, and goods made thereof, baking preparations and yeasts; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; processed grains for food for human consumption; cornmeal; cornflour; cornflakes; flaked corn; flakes (corn -); corn (processed -); fried corn; corn curls; corn (pop -); processed corn; corn chips; corn candy; flour of corn; modified corn starch; corn flakes; pop corn; roasted corn; cheese flavored puffed corn snacks; snack foods made from corn; corn flour [for food]; corn starch [for food]; seaweed flavoured corn chips; vegetable flavoured corn chips; corn kernels being toasted; corn kernels being roasted; snack foods made from corn and in the form of puffs; snack foods made from corn and in the form of rings; corn starch derivatives in powder form for making into drinks; sesame snacks; sesame seeds; sesame paste; sweetmeat made of sesame oil; roasted and ground sesame seeds; table salt mixed with sesame seeds; pumpkin porridge (hobak-juk); pumpkin pies; flakes (maize -); maize, milled; maize, roasted; roasted maize; maize flour; maize meal; maize flakes; extruded snacks containing maize; maize based snack products; foodstuffs made from maize; maize (processed -) for consumption by humans; snack foods prepared from maize; extruded food products made of maize; snack food products made from maize flour.

Class 31:        Raw nuts; unprocessed nuts; fresh nuts; cola nuts; kola nuts; nuts [fruits]; fresh cashew nuts; fresh pine nuts; betel nuts, fresh; fresh cola nuts; fresh ginkgo nuts; fresh gingko nuts; nuts being fresh; edible nuts [unprocessed]; fresh fruits, nuts, vegetables and herbs; fresh fruits; raw fruits; unprocessed fruits; almonds [fruits]; nuts [fruits]; mixed fruits [fresh]; tropical fruits [fresh]; fresh dragon fruits; fresh citrus fruits; fresh fruits, nuts, vegetables and herbs; gift baskets of fresh fruits; berries, fresh fruits; almonds [fruits]; fresh almonds; sunflower seeds; hazelnuts; fresh hazelnuts; peanuts, unprocessed; fresh peanuts; peanuts, fresh; cereals (unprocessed -); unprocessed cereals; grains [cereals]; raw cereals [unprocessed]; malts and unprocessed cereals; malt grains [unprocessed]; by-products of the processing of cereals, for animal consumption; residual products of cereals for animal consumption; cereals (residual products of -) for animal consumption; biscuits made from cereals for animals; processed cereals for consumption by animals; cereals products for consumption by animals; grains [seeds]; unprocessed grains for eating; corn (unprocessed -); fresh corn; raw corn; unprocessed corn; fresh corni fructus (sansuyu) in the nature of live plants; dried corn husks for decoration; edible sesame, unprocessed; fresh pumpkins; maize; maize cake for cattle; maize for consumption by animals; maize products for consumption by animals.

The contested goods are the following:

Class 29:        Preserved, dried and cooked fruits and vegetables; snacks, prepared and semi-prepared meals and part preparations included in class 29.

Class 30:        Bread, pastry and confectionery; snacks, prepared and semi-prepared meals and part-preparations, included in class 30, including snacks, mainly consisting of a bread, bread roll or pastry component, mainly consisting of meat and/or meat products, charcuterie, poultry and/or poultry cuts, vegetables and/or vegetable products, cheese, spices and herbs; extruded and pelletised or otherwise manufactured or processed potato, corn, rice or other cereal products for snacks; savoury biscuits and pretzels.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s and the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

Preserved fruit; dried fruits, cooked fruits are identically contained in both lists of goods.

The contested preserved, dried and cooked vegetables are included in the broad category of the opponent’s processed vegetables. Therefore they are identical.

The contested snacks include as a broader category the opponent’s snack foods based on nuts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested prepared and semi-prepared meals and part preparations included in class 29 are similar to the opponent’s processed vegetables. Both are foodstuffs that could be directly consumed or consumed after simple preparation so the nature and purpose is similar. These goods can coincide in producer, end user and distribution channels.

Contested goods in Class 30

The contested bread, pastry is included in the broad category of the opponent’s preparations made from cereals. Therefore they are identical.

The contested confectionary includes as a broader category the opponent’s coated nuts [confectionery]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested snacks include as a broader category the opponent’s snacks manufactured from cereals. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested extruded and pelletised or otherwise manufactured or processed corn, potato, rice or other cereal products for snacks overlap with the opponent’s snack foods consisting principally of extruded cereals. Therefore they are identical.

The contested savoury biscuits overlap with the opponent’s biscuits for human consumption made from cereals. Therefore, they are identical.

The contested pretzels are included in the broader category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested prepared and semi-prepared meals and part-preparations, included in class 30, including snacks, mainly consisting of a bread, bread roll or pastry component, mainly consisting of meat and/or meat products, charcuterie, poultry and/or poultry cuts, vegetables and/or vegetable products, cheese, spices and herbs are similar to the opponent’s foodstuffs made from cereals. The nature of the goods and purpose of the goods is similar as is the method of use. They may be competitive and will coincide in distribution channels and relevant public. They may also come from the same providers.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large.

The degree of attention is considered to vary from low to average because the goods at hand are frequently purchased everyday goods.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public because the dominant verbal elements of the marks are distinctive for most of this public.

The earlier mark is a figurative mark made up of the word ‘meray’ in a fairly standard white lowercase typeface over a red rectangular background. The background is considered non-distinctive as it is a simple geometric shape. The word element ‘meray’, the dominant element of the earlier mark, has no meaning in English and so is distinctive for the goods at hand. Underneath the word element is a white line that veers downwards and tapers off to a point towards the right. This line simply draws attention to the word ‘meray’ and is not particularly striking. The earlier mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The contested mark is a figurative made up of the verbal elements ‘MERANO Speck Familie Rauch’. ‘MERANO’ appears in red capital letters in a fairly basic typeface. It may be understood by a small part of the English-speaking public as the town in South Tyrol, northern Italy. For this part of the public the word ‘MERANO’ is weak as it would seem to indicate the geographical region where the goods come from. However for the majority of the English-speaking public ‘MERANO’ will have no meaning and for this part of the public the word is distinctive for the goods at issue. The last letter ‘O’ contains a flower-like symbol that will be perceived as purely decorative. ‘Speck’, has no meaning in English and so is distinctive for the goods at issue. The word ‘Speck’ appears in a smaller black typeface aligned to the left under ‘MERANO’. The words ‘Familie Rauch’ appear to the right and are extremely small and difficult to read due to the typeface used. These words are barely perceptible at first sight. As they are likely to be disregarded by the relevant public, they will not be taken into consideration in the comparison of the signs. The word elements are framed by a red oval shape, which is a simple geometric shape that creates the impression of a label and as such is non-distinctive. The word ‘MERANO’ is the dominant element of the contested sign.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The comparison will be made taking into consideration the part of the English- speaking public that will not recognise ‘MERANO’ as having any meaning as the likelihood of confusion is greatest for this part of the public.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in ‘MERA’, the first four letters at the start of dominant, distinctive verbal elements of both marks. They differ in the end of these verbal elements, ‘y’ in the earlier sign and ‘NO’ in the contested mark. Red and white are the main colours used in both signs. However, the signs differ in the distinctive verbal element ‘Speck’ that appears in black only in the contested sign and in the weak and non-distinctive figurative elements referred to above. Therefore, the signs are similar to an average degree.

Aurally, with regard to the dominant, distinctive verbal elements of the signs, the pronunciation coincides in the sound of the letters ‛MERA’, present identically at the start of both signs and it differs in the sound of the letters ‛Y’ in the earlier mark and ‘NO’ of the contested sign. In addition the signs differ aurally in the pronunciation of ‘Speck’ present only in the contested sign. Therefore, the signs are similar to a below average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

In addition, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case the goods are identical and similar. The signs are visually similar to an average degree coinciding in four letters at the beginning of the distinctive dominant elements of both signs. The signs are aurally similar to a below average degree and the conceptual aspect does not influence the similarity between the signs.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).

Taking into consideration all the foregoing and the fact that the average consumer retains only an imperfect image of the mark, the Opposition Division considers, that the dissimilarities between the signs are not enough to counteract the visual and aural similarities. The relevant consumers will perceive first and foremost the letters ‘MERA’ included identically in the dominant verbal elements of both signs. This coincidence is also at the beginning of the signs where the consumers’ attention is centred. It is true that the contested mark contains an additional distinctive verbal element, ‘Speck’. However this element is secondary due to its positioning and size and cannot overcome the similarities in the distinctive, dominant elements mentioned above.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public that do not give any meaning to the word element ‘MERANO’ in the contested sign. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The fact that both marks use predominantly the colours red and white reinforces the likelihood of confusion. The visual similarity is important given the nature of the goods and the differences between the marks are not sufficient to rule out likelihood of confusion on goods that are identical or similar. This is particularly true for consumers with a low degree of attention.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 517 353. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Renata COTRELL

Lynn BURTCHAELL

Sigrid DICKMANNS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.